The Supreme Court of Appeal (SCA) of South Africa recently delivered a judgment in a trade mark infringement case between iCollege (Pty) Ltd (“iCollege”) and Xpertease Skills Development and Mentoring CC (“Xpertease”). The Court found that Xpertease’s use of a mark that closely resembled iCollege’s registered trade mark resulted in a likelihood of deception or confusion arising. As a result, the Court granted an interdict to restrain Xpertease from infringing iCollege’s trade marks and ordered the transfer of ownership of its domain name (icollege.co.za) to College.
iCollege is a private Further Education and Training College that provides skills-based training in international and accredited courses at its campuses nationwide and via an online learning center. It is the registered proprietor of two trade marks (depicted below) that prominently feature the word “iCOLLEGE.” Xpertease made use of a mark (also depicted below), which wholly incorporates the mark iCOLLEGE in relation to information technology and vendor-specific technologies, presented as e-learning courses online to consumers worldwide. iCollege filed an application in 2019 to interdict Xpertease from infringing its trade marks. the High Court, or court a quo, dismissed that application and iCollege appealed the decision to the SCA.
The parties’ marks that are the subject of the dispute:
ICollege’s marks
Xpertease’s mark
Unfortunately, the High Court, despite having cited established trade mark authorities and noting the longstanding and correct principles applied to such cases, erred in its application and issued a questionable decision. Specifically, the court misapplied the principle regarding notional use of a trade mark and considered that the parties’ services were sufficiently distinguishable because the method of delivery of their learning content, the precise nature of the learning material and nature of the qualifications conferred by the parties were all different, in its view. In addition, the Court went on to consider the degree of distinctiveness of the already registered trade marks of iCollege and their ability to function as a badge of origin. The SCA correctly disregarded these considerations and returned to the fundamental principles of trade mark law.
The SCA considered whether Xpertease’s mark closely resembled iCollege’s registered trade marks to the extent that it would likely deceive or cause confusion. The Court compared the marks and concluded that the dominant feature of both marks, the word “iCOLLEGE,” was visually and phonetically identical. It noted that the differences in font and accompanying words used by Xpertease, i.e. “online learning”, did not detract from the overall similarity of the marks. The Court emphasized that the likelihood of confusion must be assessed from the perspective of an average consumer and considered the global impression created by the marks. The Court highlighted the importance of the dominant word element, “iCOLLEGE” and its likely impact on consumers.
The Court found that the marks were confusingly similar, and that the use of Xpertease’s mark could deceive or confuse consumers into believing there was a material link between the services offered by Xpertease and iCollege. The SCA also correctly confirmed the interdependence between the similarity of marks and similarity of goods and services.
The Court rejected Xpertease’s argument that the nature and scope of their services, being exclusively online and not locally accredited, would diminish the likelihood of confusion. These specific facts were not relevant as confirmed by the SCA. It further held that the test for confusing similarity applies equally to goods and services and does not require identical services or training methods.
The SCA also crisply explained the effect of disclaimed matter, indicating that its relevance remains when comparing marks as wholes and notwithstanding that there can be no infringement of disclaimed matter.
Ultimately, the SCA upheld iCollege’s appeal, set aside the High Court’s order, and granted an interdict against Xpertease to prevent the infringement of iCollege’s trade marks.
This decision, although seemingly straightforward, may be celebrated for the back to basics, or should we say college, approach adopted by the SCA. It also goes some way in highlighting the importance of registering trade marks and ensuring protection that is endorsed by statute.
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Read the original publication at Adams & Adams.
